WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laverana GmbH & Co. KG v. Victor Tang
Case No. D2013-2045
1. The Parties
The Complainant is Laverana GmbH & Co. KG of Wennigsen, Germany, represented by RWZH rechtsanwälte, Germany.
The Respondent is Victor Tang of Clyde Hill, Washington, United States of America (‘USA”), represented by Corr Cronin Michelson Baumgardner & Preece, LLP, USA.
2. The Domain Name and Registrar
The disputed domain name, <lavera.com> (the “Domain Name”), is registered with DomainPeople, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 4, 2013.
The Center verified that the Complaint together with the amendment to the Complaint/amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. On December 13, 2013, the Center received an email communication from Respondent requesting the extension of the Response due date. On December 17, 2013, the Center requested Complainant to provide its comments on that regard, if any. On December 18, 2013, Complainant opposed by email to the extension of the Response due date. Further to the Respondent’s request for an extension to file a Response, and taking into account the stated reasons for that request, and considering the objection of the Complainant, the Center granted an extension of time until December 27, 2013. The Response was filed with the Center on December 26, 2013.
On December 27, 2013, the Center sent an email communication to the parties indicating that it had been brought to the Center’s attention in the Response that there is a “lawsuit in the United States District Court for the Western District of Washington, USA, to resolve multiple disputes with Complainant […]”. In this light, the Parties were requested to keep the Center timely advised of any developments in any pending or ongoing court proceedings which are (or may be) of relevance to the present UDRP dispute.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 6, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having read the case file, it became apparent to the Panel that further information as to the history of the Domain Name was necessary, before the Panel could come to a decision in this case. The Panel conducted investigations at the “www.domaintools.com” website and, by way of Procedural Order No. 1 dated January 10, 2014, put the results of those investigations to the parties inviting further submissions. The Respondent filed a further submission in response on January 14, 2014. The Complainant filed a further submission on January 15, 2014.
4. Factual Background
The Complainant is a German company engaged in the manufacture, distribution and sale of cosmetics under and by reference to the trade mark LAVERA. It has been using the LAVERA trade mark since the 1980s. It is the proprietor of a large number of registrations of the LAVERA trade mark, one of which is International trade mark registration No. 518849 dated January 11, 1988 LAVERA (word) in classes 3, 5 and 32 for various cosmetic products, pharmaceuticals and non-alcoholic drinks. For completeness it should be added that the Complainant has had trade mark protection for LAVERA in North America since at least 2002.
The history of the distributorship of the Complainant’s products in North America is complex and the only detail is provided by the Respondent.
The history of the ownership of the Domain Name is also, on its face somewhat complex, and is derived from the Panel’s DomainTools.com searches as supplemented by the Respondent’s response to the Procedural Order No. 1. Very little detail has been provided by the Complainant.
For the purposes of this Decision the Panel treats the following account as a substantially accurate factual account.
According to the Respondent there was a 1999 distributorship agreement between Lavera GmbH1 and A. Dewor. From 2000 Andreas Dewor used a Californian company, Ars Vivendi, to market the Complainant’s products in the USA and Canada. Ars Vivendi was owned by A. Dewor and his then wife, U. Jacob. The couple divorced in 2004.
The Domain Name was first registered on July 7, 2003, but was acquired by the Respondent “from [J.] Lee effective October 26, 2005”. The Respondent has produced documentary evidence to show that in the autumn of 2005 he was negotiating the purchase of the Domain Name from the previous registrant.
According to the Respondent the Domain Name has been licensed to a United States Corporation, Lavera Skin Care North America (“LSCNA”), since 2006 for the promotion and sale of the Complainant’s products in North America.
According to the Respondent “Ars Vivendi was closed in early 2007”. Nonetheless, as can be seen below Ars Vivendi’s name continued to appear on the Whois record for the Domain Name for some years thereafter.
On January 7, 2008 the Domain Name was registered to Ars Vivendi and the Administrative Contact was “Ars Vivendi, [U.] Jacob Dewor”.
On September 11, 2008 the Complainant entered into agreements with Lavera Skin Care North America for the distribution of the Complainant’s products in the USA and Canada. Given the previous use made of the Domain Name since at least April 2006 (see below), it seems probable to the Panel that these agreements either formalised or continued a pre-existing arrangement.
In 2009 U. Jacob married the Respondent.
On May 28, 2009 the Domain Name was registered to Ars Vivendi and the Administrative Contact was “Lavera Skin Care, Victor Tang”.
On November 19, 2009 the Domain Name was registered to Ars Vivendi (lavera.com) and the Administrative Contact was “Victor Tang”.
On June 7, 2010 the Domain Name was registered to Ars Vivendi, Victor Tang and the Administrative Contact was “Victor Tang”.
Since January 1, 2011, LSCNA has been owned exclusively by U. Jacob-Dewor, the Respondent’s wife.
On April 29, 2012, the Domain Name was registered to Victor Tang and the Administrative Contact was “Victor Tang”.
From at least August 28, 2013 to date the Domain Name has been registered to WhoisProtector Inc. with “WhoisProtector Inc.” as the Administrative Contact and the Registrar has confirmed that Victor Tang has been the underlying registrant.
Annex 11 to the Complaint is a screenshot featuring the Respondent’s website dated November 27, 2013. It gives all the appearance of being an official website devoted exclusively to the Complainant’s brand. In very small print at the bottom right of the page appears the legend “Official Website of Lavera North America” and a copyright notice reading “© True Nature Group Inc.” True Nature Group Inc. is a company of the Respondent.
From the evidence put before the Panel by the parties as supplemented by the Panel’s researches into the screenshots available for the Domain Name at DomainTools.com, it is clear to the Panel that from April 2006 to date the website to which the Domain Name has been connected has been used exclusively for the promotion and sale of the Complainant’s products2 by LSCNA. Moreover, throughout that period the Respondent has either owned or at least been very closely associated with ownership of the Domain Name.
On March 13, 2013 the Complainant wrote a letter to LSCNA (addressed “Dear [U.], dear Ms Jacob, dear sirs”) purporting to terminate forthwith the distribution agreements between the Complainant and LSCNA dated September 11, 2008 relating to the USA and Canada. The letter spells out in some detail a series of alleged violations of those distribution agreements.
The Respondent disputes that the distributorship has been terminated and contends that LSCNA is contractually entitled to continue to use the Domain Name as it is currently using it until December 31, 2015.
On December 26, 2013, LSCNA and the Respondent issued proceedings against the Complainant in the United States District Court (Western District of Washington at Seattle) seeking inter alia declaratory relief including a declaration that LSCNA and the Respondent have a continuing right to use the Domain Name. The Complaint includes a catalogue of alleged contractual violations on the part of the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the Complainant’s LAVERA trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent accepts that the Domain Name is confusingly similar to the Complainant’s LAVERA trade mark, but denies the Complainant’s other contentions.
The Respondent contends that the Domain Name was acquired from a third party for the purpose of licensing it to the Complainant’s US distributor, LSCNA, and that the Domain Name has been used exclusively for the purpose of promoting and selling the Complainant’s products in North America ever since.
The Respondent prays in aid the terms of the distribution agreements between the Complainant and LSCNA, which the Respondent claims allows LSCNA to continue inter alia to use the Domain Name until December 31, 2015.
The Respondent contends that the issue as to whether the Domain Name should be transferred is a matter which should be left to the United States District Court (Western District of Washington at Seattle), which is now seized of that matter and other related issues.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
There is no dispute between the parties (nor could there be) that the Domain Name is identical or confusingly similar to the Complainant’s LAVERA trade mark.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
In light of the Panel’s finding under paragraph D below, it is unnecessary for the Panel to address this issue.
D. Registered and Used in Bad Faith
The Complainant’s position on this is very straightforward. The Respondent, Victor Tang, is unknown to the Complainant. He is not and never has been authorized to use the Complainant’s LAVERA trade mark for the Domain Name or for any other purpose. The fact that he may be LSCNA’s licensor insofar as the Domain Name is concerned is irrelevant to this proceeding. LSCNA is not a party to this proceeding. Moreover, the licence that LSNCA once had pursuant to the distributorship agreement has now been terminated. Whatever may have been the position in the past, all use of the Domain Name is now unlicensed and in breach of the Complainant’s trade mark rights. Additionally, the Domain Name is being used to promote and sell products competing with the Complainant’s products.
Dealing with that last point first, the Panel has not been able to find supporting evidence for the claim that the Respondent is using the Domain Name to promote and sell products competing with the Complainant’s products. Neither the Complaint nor the Complainant’s response to the Procedural Order No. 1 points to a supporting exhibit unless the Complainant is claiming that the LAVERA products now being promoted and sold through the website connected to the Domain Name are counterfeit. Were that to be the allegation, the Panel would have expected very specific evidence in support.
In any event, however, even if the current use of the Domain Name is a bad faith use (not a matter upon which the Panel offers an opinion for reasons which follow below), the Complaint will only succeed if the Panel is satisfied that the Domain Name was acquired in bad faith back in October 2005. Paragraph 4(a)(iii) of the Policy calls for evidence that the Domain Name was registered and is being used in bad faith.
The Panel has gone into some detail in section 4 above (Factual Background) when setting out the available evidence charting the registration and use of the Domain Name. While the circumstances surrounding the acquisition of the Domain Name are unclear, it appears to the Panel that the Domain Name has always been used by a distributor of the Complainant’s goods and for that purpose and that purpose alone. On the evidence before the Panel there is nothing to indicate any bad faith intent and it is notable that until the Complainant decided to terminate the distributorships with LSCNA in March 2013, the Complainant raised no complaint about the use of the Domain Name, which would seem to indicate that the Complainant was happy with that use and saw no reason to investigate its ownership. Indeed, the Complainant has confirmed that it was only in 2013 that title to the Domain Name was investigated.
In answer to a question in the Procedural Order No. 1 the Complainant says “It cannot be clarified at what point in time the Complainant first acquired knowledge about the Disputed Domain Name.” The Respondent produces what it claims to be evidence that the Complainant filed a copy of a webpage from the website with the United States Patent and Trade Mark Office in 2008 in support of a trade mark application. The Panel does not rely upon that page, because the Panel could not be certain that it was a document filed by the Complainant. However, the Panel is certain that the Complainant must have been aware that its products were being promoted online at that time and must have been aware back then of the existence of the Domain Name and the use to which it was being put.
Questions to which the Panel has no answers include: What prompted the Respondent to acquire the Domain Name back in 2005? Did he, without any justification, register the Domain Name in order to derive licence fees from the Complainant’s distributor? Was he an employee of Ars Vivendi? Where did the purchase price come from? If it could be established, for example, that the Respondent registered the Domain Name and ensured that it remained in his name (or the name of one of the companies with which he was associated) to retain it as a negotiating tool to bargain with when debating distributorship issues, then that would be likely to be a bad faith reason for having registered it. However, there is insufficient evidence before the Panel to come to that conclusion. The Panel does not have answers to these questions and believes that the full story will only emerge in the court proceeding commenced by the Respondent and LSCNA against the Complainant in Seattle, USA.
The Panel is not satisfied on the evidence before him that the Domain Name was registered in bad faith.
Reverting to the issue of the current use of the Domain Name, it could only be of relevance if (a) it is a bad faith use and (b) it is indicative of the Respondent’s true intentions back in 2005 when acquiring the Domain Name (i.e. supporting the claim of bad faith registration).
Whether or not it constitutes bad faith use is dependent to a large extent on whether the website is promoting the sale of competing products, which is not obvious to the Panel, and whether the distributorship agreements have been properly terminated in which case the Respondent’s continuing use may arguably be in breach of the Complainant’s trade mark rights.
The short answer to all that is that the conflicts of fact are extensive, the Panel has not been shown the distribution agreements other than in extract form, the contracts will be subject to a law with which the Panel is not familiar and the Policy is not suitable for resolving such disputes. The dispute is already in the hands of a United States court, which will have the advantage of full evidence and discovery, in coming to a decision.
The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: January 25, 2014
1 This is taken by the Panel to be either a mis-spelling of the Complainant’s name or the name of a company associated with the Complainant.
2 The Complainant asserts that the website is being used to market competing products, but the Panel has not been able to find any trace of this and the Complainant does not identify the basis for the assertion.